ITALY Law and Practice Contributed by: Giovanni F Casucci, Matteo Casucci, Serena Spadavecchia and Alice Niccoli, GA-Alliance
4. Safeguarding Against Allegations of Trade Secret Misappropriation 4.1 Pre-Existing Skills and Expertise Italian courts generally draw a clear line between an employee’s general knowledge and skills and legally protectable trade secrets. Accordingly, it falls to the employer to explicitly identify the content of the trade secrets in order to distinguish them from the employ - ee’s general expertise, and to make these bounda - ries enforceable after the employment relationship has ended. As a general rule, Italian jurisdiction does not rec - ognise the doctrine of “inevitable disclosure”, even though Article 2125 of the Italian Civil Code provides a possible non-compete clause in the employment agreement subject to certain conditions regarding scope, duration (not exceeding five years for manag - ers and three years for other employees), geographic limits, and the requirement of fair compensation for the employee. 4.2 New Employees Generally speaking, an entrepreneur seeking to hire one or more employees from a competing business is considered a legitimate exercise of economic initia - tive, protected under Article 41 of the Italian Constitu - tion, as well as an expression of the free movement of labour under Article 4 of the same Constitution. It is possible to carry out a specific entry procedure when hiring new staff – for example, by conducting an interview and having the new employee sign a dec - laration confirming that they are not in possession of any information and/or documents belonging to their previous employer or third parties. Accordingly, in order for the act of recruiting collabora - tors or employees to amount to an act of unfair com - petition under Article 2598, No 3 of the Italian Civil Code, it must be demonstrated that the conduct was pursued with the specific intent to harm the compet - ing business – ie, with awareness and animus nocendi – and that the harm caused exceeds the ordinary prej - udice resulting from an employee’s voluntary decision to change employers. In essence, the conduct must be aimed at depriving the competing entrepreneur of the return on their investment in human resources.
Nonetheless, please note that Article 4 of Legislative Decree No 63 of 11 May 2018 introduced, among other things, Article 99 of Legislative Decree No 30 of 10 February 2005; according to paragraphs 1-bis and 1-ter thereunder, the conduct of anyone who acquires or uses information while being aware, or, depend - ing on the circumstances, who should have been aware, that such information constituted trade secrets belonging to others, obtained directly or indirectly from a third party who used or disclosed it unlawfully, shall also be considered unlawful. Relevant rules and case law do not list specific best practices and/or approaches to be used before the individual is hired or during the onboarding process. Nonetheless, a few protective actions may be tak - en by the employer (eg, written statements that the employee’s knowledge does not violate the rights of third parties). There are no strict prerequisites for filing a lawsuit in IP matters, including trade secret cases. In particu - lar, there is no need to send a warning letter. In fact, such an initiative may undermine the element of sur - prise necessary for ex parte orders and may prompt the recipient to initiate a declaratory action for non- infringement. Before filing a lawsuit, it is highly recommended to verify that all the conditions for trade secret protec - tion are met – especially the existence of reasonable protective measures at the time of the alleged misap - propriation. It is also advisable to acquire formal and, where possible, third-party-certified evidence of the misappropriation. 5.2 Limitations Period Under Italian law, there is no statute of limitations for bringing a claim for trade secret misappropriation. However, the right to claim damages arising from a tort (which includes trade secret misappropriation) is subject to a five-year limitation period, starting from the date on which the tort occurred. This generally means that the IP right-holder has five years from the 5. Trade Secret Litigation 5.1 Prerequisites for Filing a Lawsuit
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